O-223-08 TRADE MARKS ACT 1994 IN THE MATTER OF APPLICATION NO. 2363401 IN THE NAME OF SKYWORTH TV HOLDINGS LTD AND IN THE MATTER OF OPPOSITION THERETO UNDER NO. 94077 BY BRITISH SKY BROADCASTING GROUP PLC TRADE MARKS ACT 1994 IN THE MATTER OF application No. 2363401 in the name of Skyworth TV Holdings Ltd and in the matter of opposition thereto under No. 94077 by British Sky Broadcasting Group Plc BACKGROUND 1. On 15 May 2004 Skyworth TV Holdings Limited applied to register the following mark: for the following specification of goods: Class 9 Apparatus for recording, transmission or reproduction of sound or images or data or information; televisions, laser discs players, digital video disc players, DVD recordable, portable digital video disc players, compact disc players, set-top boxes, electric cable boxes, wide band modems, video recorders, video players, cassette players, amplifiers, loud speakers, audio and video receivers, radios, tape recorders, microphones, video cameras; parts and fittings for all the aforesaid goods; all in Class 9. 2. On 23 January 2006 British Sky Broadcasting Group Plc filed notice of opposition to this application citing grounds under sections 5(2)(b), 5(3) and 5(4)(a) of the Act. The opponent relies on the following two earlier trade marks: Mark Registration Registration Specification No. Date SKY 2302176B 31.12.2004 Class 9: (filing date of Photographic, cinematographic, 5. 6. 2002) weighing, measuring, radio, television, sound recording, sound reproducing, telecommunications, signalling, checking (supervision), teaching apparatus and instruments; apparatus for recording television programmes; apparatus 2 for recording, transmission, reproduction or reception of sound or images; electrical and electronic apparatus for use in the reception of satellite, terrestrial or cable broadcasts; television receivers including a decoder; set-top boxes for use in decoding and reception of satellite, terrestrial and cable broadcasts; apparatus for decoding encoded signals including set top boxes for television reception; set top box apparatus including a decoder and an interactive viewing guide; set top box apparatus including a decoder and a recorder for recording television and audio programmes; set top box apparatus including a decoder and a recorder programmable to transfer stored recordings to storage and also to delete the older recordings; recorded television and radio programmes; recorded programmes for broadcasting on television and on radio; video recordings; computers; computer programmes; electronic computer games; electronic interactive computer games; computer software and computer programs for distribution to, and for use by, viewers of a digital television channel for the viewing and purchase of goods; computer games software and computer quiz software; computer video games and/or quizzes adapted for use with television receivers and screens or with video monitors or with computer screens; computer programmes for interactive television and for interactive games and/or quizzes; electronic publications, computer software, computer games, computers video games, all relating to betting, gaming, gambling, lottery or book making services; video screens; video projectors; tapes, discs and wires, all being magnetic; 3 cassettes and cartridges, all adapted for use with the aforesaid tapes; blank and pre-recorded audio and video cassettes, tapes and cartridges; compact discs; dvd discs; phonographic records; laser readable discs for recording sound or video; ROM cartridges, CD Roms, cards and discs, integrated circuit cards, memory carriers, recording media, all pre-recorded with computer video games and/quizzes; encoded cards; radio and television signal antennae; parts and fittings for all the aforesaid goods; sunglasses. Class 28: Toys, games and playthings, electronic games; hand-held electronic video games; parts and fittings therefor, gymnastic and sporting articles; ordinary playing cards. Class 36: Insurance, financial affairs; monetary affairs; financial services; credit services; finance services; financial services, all relating to betting, gaming, gambling, lotteries or book making; provision of financial information relating to betting, gaming, gambling, lotteries or book making services; information, advice and assistance relating to the aforementioned services. Class 41: Education and entertainment services; provision of training; education and entertainment services by means of radio, television, the Internet and on-line databases; hiring, rental and leasing of cine-films, video cassettes, sound recordings, sound recording apparatus, sports apparatus, television sets and video recorders; 4 production of films for television and cinema; provision of information relating to television and radio programmes, to entertainment, music and to sport; providing on-line electronic publications (not downloadable); publication of magazines, books, texts and printed matter; publication of electronic books or journals on-line; provision of recording studio facilities; live show production services; organising of sporting activities and competitions; information and advisory services relating to education, recreation, sport and to entertainment; information relating to education, entertainment, recreation or sport, provided on-line from a computer database or the Internet; organisation of competitions; box office services; credit betting, gaming, gambling, lottery or book making services; credit card betting, gaming, gambling, lottery or book making services; production and presentation of programmes transmitted by television, the Internet or other telecommunication channels for the conduct of the interactive viewing, selection and purchase of goods; ticket reservation services relating to entertainment; production and presentation of radio and television programmes, interactive television, interactive games, interactive entertainment and interactive competitions; production and presentation of competitions, contests, games, quizzes, studio entertainment and audience participation events; interactive services for television viewers; viewing guide services; sporting and cultural activities; betting, gaming and gambling services; organising and conducting lotteries; electronic betting, gaming, gambling and 5 lottery services provided by means of the Internet, or via a global computer network, or on-line from a computer network database, or via telephony including mobile telephones, or via a television channel including a television channel distributed by satellite, terrestrial or cable television broadcast; credit betting, gaming, gambling, lottery or book making services; credit card betting, gaming, gambling, lottery or book making services; electronic publishing services; information and advisory services relating to the aforesaid services; news, current affairs and educational information services; video taping and filming services, factual information services relating to television programmes, and to sport. Class 42: Design and development of computer hardware and software; design, drawing and commissioned writing all for the compilation of web pages on the Internet; information provided on-line from a computer database or via the Internet; creating and maintaining websites; installation, rental and maintenance of computer software; leasing access time to an information database; providing access to a database storing information relating to a variety of goods; weather forecasting; home computer services. Class 43: Services for providing food and drink; arranging, booking and reservation of accommodation; temporary accommodation services; restaurant services; bar services; cafeteria and snack bar services; hotel services, hotel reservations services; restaurant information 6 services. Class 45: Provision of horoscopes. SKY + 2271255 23.11.2001 Class 9: (filing date of Electrical and electronic apparatus 29. 5. 2001) and instruments; all relating to communications and broadcasting; scientific, nautical, surveying, optical, weighing, checking (supervision), telecommunications apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers; radio, television, sound recording, sound reproducing apparatus and instruments; recorded programs for television and for radio; recorded television programmes, recorded radio programmes, recordings of broadcast data; computer programs; tapes, discs and wires, all being magnetic media; cassettes and cartridges, all adapted for use with the aforesaid tapes; encoded cards; blank and pre-recorded audio and video cassettes, tapes, discs and cartridges; compact discs; dvd discs; phonographic records; laser readable discs for recording sound or video; apparatus for decoding encoded signals including set-top boxes for television reception; decoders for television reception; video projectors, video screens; sunglasses; electronic computer games; electronic interactive computer games; parts and fittings for all the aforesaid goods. Class 16: Printed matter; periodical publications; newspapers; magazines and comics; journals and books; photographs; instructional and teaching material; posters; postcards and greeting 7 cards; calendars; diaries; cards and stickers for collecting and collating in albums; ordinary playing cards. Class 35: Advertising and promotional services; rental of advertising space; television advertising commercials; preparation and presentation of audio and visual display for advertising